ISLA DELICE | Decision 2686825
Date Published: Sep 28, 2017
OPPOSITION No B 2 686 825
Jurado Hermanos, S.L., Polígono Industrial Plá de la Vallonga, Calle Nieve Nº 8, Parcela 88, 03006 Alicante, Spain (opponent), represented by Clara Eugenia Martin Alvarez, Vicente Blasco Ibañez, 43, entlo. drcha., 03201 Elche (Alicante), Spain (professional representative)
a g a i n s t
Zaphir, Société par actions simplifiée, 38 rue du Perouzet, 95100 Argentuil, France (holder), represented by Regimbeau, 20, rue de Chazelles, 75847 Paris Cédex 17, France (professional representative).
On 04/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 686 825 is partially upheld, namely for the following goods and services:
Class 30: Coffee, tea, cocoa, sugar, sago, artificial coffee; flours and preparations made from cereals, bread, pastry and confectionery, honey, treacle.
Class 43: Restaurant services (providing food and drink), catering services.
2. International registration No 1 265 675 is refused protection in respect of the European Union for all the above goods and services. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of international trade mark registration designating the European Union No 1 265 675, namely against all the goods and services in Classes 30 and 43. The opposition is based on European Union trade mark registration No 10 623 486. The opponent invoked Article 8(1)(a) and (b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
The goods on which the opposition is based are the following:
Class 29: Fish, poultry and game; Meat extracts; Eggs; Edible oils and fats.
Class 30: Coffee, tea, artificial coffee; Rice; Tapioca and sago; Flour; Bread; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice.
Class 35: Advertising; Business management; Business administration; Office functions, import and export, retailing in shops and via global computer networks of coffee, tea and artificial coffee.
The contested goods and services are the following:
Class 30: Coffee, tea, cocoa, sugar, sago, artificial coffee; flours and preparations made from cereals, bread, pastry and confectionery, edible ices; honey, treacle.
Class 43: Restaurant services (providing food and drink), catering services.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 30
Coffee, tea, sugar, sago, artificial coffee, flours, bread, honey and treacle are identically contained in both lists of goods.
The contested preparations made from cereals include as a broad category the opponent’s bread; therefore, they are identical.
The contested cocoa has the same method of use as the opponent’s coffee. Moreover, these goods target the same end users, are distributed through the same channels and are in competition. Therefore, they are similar.
The contested pastry and confectionary have the same providers, distribution channels and end users as the opponent’s bread. Therefore, these goods are similar to a low degree.
The opponent’s ice is to be understood as ‘cooling ice’. The natures of the opponent’s ice and the contested edible ices are different. Although both consist (partly) of frozen water, their commercial nature is different because the former is an auxiliary product used for preserving and/or cooling foodstuffs, whereas the latter is a foodstuff. Their purpose and distribution channels are different. Furthermore, they are neither in competition nor complementary. Therefore, they are dissimilar. Edible ices are also dissimilar to all the remaining goods of the opponent. These contested goods and the remaining foodstuffs in Classes 29 and 30 have different natures and usual origins and generally also have different distribution channels. They are neither complementary nor in competition. Furthermore, edible ices have nothing in common with the services in Class 35.
Contested goods in Class 43
The contested restaurant services (providing food and drink), catering services (also understood as provision of food and drink) are intended to serve food and drinks directly for consumption. The mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45; 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26). Nevertheless, in certain situations these goods and services can be complementary (17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). Goods or services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking. Consumers may think that responsibility lies with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of such goods are commonly offered by the same undertaking under the same trade mark. In view of the above, the contested restaurant services (providing food and drink) and catering services are complementary to the opponent’s coffee, tea, artificial coffee and bread, and therefore, they also have the same providers and distribution channels. Overall, the contested services are similar to a low degree to the opponent’s coffee, tea, artificial coffee and bread.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services found to be identical or similar are directed at the public at large. The degree of attention will be average.
- The signs
DELISSE | ISLA DELICE |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Slavic part of the public, such as the Bulgarian-, Czech- and Slovak- -speaking parts of the public, for which neither of the signs has meaning.
The earlier mark is a word mark made up of a single word, ‘DELISSE’, which has no meaning for the relevant public and, therefore, is distinctive.
The contested sign is a word mark composed of two words, ‘ISLA’ and ‘DELICE’. Neither of these elements has a meaning for the relevant public and, therefore, they are both distinctive.
Visually, the signs coincide in the string of letters ‘DELI’ and the letter ‘E’ placed at the end of each sign. They differ in their penultimate letters (‘S’ in the earlier mark and ‘C’ in the contested sign), in the additional letter ‘S’ in the earlier mark and in the additional word ‘ISLA’ in the contested sign. The earlier mark is composed of seven letters and the contested sign is made up of ten letters. Account is taken of the fact that a substantial part of the earlier mark (five out of seven letters) forms half of the contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the differing letters, ‘SS’ and ‘C’, will be similar, given that the double ‘S’ may be barely perceptible and that ‘S’ and ‘C’ are consonants that are pronounced similarly. The contested sign is made up of five syllables and the earlier mark is composed of three syllables, which are, however, pronounced almost identically to the corresponding syllables in the contested sign. Account is also taken of the pronunciation of the additional element ‘ISLA’ in the contested sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
As concluded above, the contested goods and services are partly identical, partly similar to various degrees and partly dissimilar to the goods of the earlier mark. The degree of attention would be average when choosing the relevant goods and services.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Therefore, considering the normal degree of distinctiveness of the earlier mark and the average degree of visual and aural similarity between the signs to an average degree, along with the fact that neither of the signs has a meaning for the relevant public, there is a likelihood of confusion.
Overall, the Opposition Division finds that there is a likelihood of confusion on the part of the Slavic part of the public, such as the Bulgarian-, Czech- and Slovak-speaking parts of the public, and therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 623 486. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to the goods of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Zuzanna STOJKOWICZ | José Antonio GARRIDO OTAOLA | Erkki MÜNTER |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.